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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Microsoft Corporation and HP
`
`Inc.,
`
`Petitioners, v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`
`Patent Owner.
`
`
`
`
`
`IPR2020-00316
`U.S. 9,098,526
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`
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`PATENT OWNER SUR-REPLY
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`
`
`Contents
`
`PATENT OWNER SUR-REPLY ........................................................................................ 1
`
`I.
`
`Introduction. ................................................................................................................... 1
`
`II. PO’s Claim Constructions Are Consistent With the Plain and Ordinary Meaning Of
`The Claims As Understood By A POSITA In Light Of The Specification. ....................... 2
`
`A. Predefined Capacity .................................................................................................... 2
`
`B. download a file from a remote server across a network into the assigned storage
`space through utilizing download information for the file stored in said cache storage
`(independent claims 1 and 11). ......................................................................................... 4
`
`III. None Of The Claims Would Have Been Obvious Over The Combination Of
`McCown and Dutta Under The Proper Claim Construction. ............................................... 6
`
`A. The Combination of McCown/Dutta Would Not Have Taught “utilizing download
`information for the file stored in said cache storage.” ...................................................... 6
`
`B. The Combination of McCown/Dutta Would Not Have Taught “a storage space of a
`predefined capacity assigned exclusively to a user of the wireless device by a storage
`server.” ............................................................................................................................ 11
`
`C. A POSITA Would Not and Could Not Have Combined McCown and Dutta and
`Reasonably Expect Success. ........................................................................................... 13
`
`IV. Objective Indicia of Non-obviousness Support The Patentability Of The Claims Of
`The ’526 Patent. ................................................................................................................. 20
`
`
`
`
`
`
`
`i
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`
`
`I.
`
`Introduction.
`
`Under the proper claim construction as set forth by Patent Owner SynKloud
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`Technologies, LLC (“PO” or “SynKloud”), none of the claims of U.S. Patent 9,098,526
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`(“the ’526 patent”) would have been obvious. Many of the claim limitations are wholly
`
`absent from the prior art.
`
`Under these circumstances, documentary evidence is required to establish that the
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`absent limitations would have been obvious. K/S HIMPP v. Hear-Wear Technologies,
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`LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (“an assessment of basic knowledge and
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`common sense as a replacement for documentary evidence for factual findings lacks
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`substantial evidence support.”). But Petitioners make no attempt in its Reply to provide
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`the documentary evidence required to establish obviousness. Nor does it attempt to argue
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`that K/S HIMPP is not the law.
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`Instead, Petitioners restate their sole reliance on their expert declaration to advance
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`the theory that the limitations that are absent from the prior art would have been obvious.
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`See Reply, 7-25. For this very reason, Petitioners’ argument violates the mandate of K/S
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`HIMPP. It is improper to rely on after-the-fact expert declarations, rather than
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`contemporaneous documentary evidence, to support an obviousness theory that relies on
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`modifications of the prior art to supply missing limitations. Indeed, Petitioners’ Reply
`
`ignores the testimony of SynKloud’s expert Mr. Jawadi, which explains why a person of
`
`ordinary skill in the art (POSITA) would not have been motivated to modify the prior art
`
`
`
`1
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`
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`to include the missing claim limitations.
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`Moreover, Petitioners’ arguments are based on erroneous claim constructions.
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`Although Petitioners contend that the claims would have been obvious under SynKloud’s
`
`constructions, they do not, in fact, apply SynKloud’s constructions in their Petition or
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`Reply.
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`Petitioners’ Reply and Petition are based on erroneous claim constructions and the
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`mistaken view that the claim limitations that are wholly absent from the prior art would
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`have been obvious just because it says so (i.e., without any supporting documentary
`
`evidence). Petitioners have not nearly met its burden to show by a preponderance of the
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`evidence that any claim of the ’526 patent would have been obvious.
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`II.
`
`PO’s Claim Constructions Are Consistent With the Plain and Ordinary
`Meaning Of The Claims As Understood By A POSITA In Light Of The
`Specification.
`
`A.
`
`Predefined Capacity
`
`As explained by PO, the proper construction of “a storage space of a predefined
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`capacity assigned exclusively to the user of a wireless device by a storage server”
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`requires “deciding or setting in advance by a storage server an amount of storage server
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`an amount of storage space exclusively to a user of a wireless device.” PO Response, 12.
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`In response, Petitioners build and then knock down a straw man argument that
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`SynKloud never made. According to Petitioners, SynKloud’s attention to the plain and
`
`ordinary meaning of this claim limitation as understood by a POSITA means that
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`SynKloud’s construction “represent[s] a wholesale rewriting of the claim language.”
`
`
`
`2
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`
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`Reply, 6. But this is plainly not so.
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`SynKloud agrees with and endorses the Federal Circuit’s prohibition against
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`rewriting claims. But it is simply not relevant here. SynKloud does not make the
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`argument prohibited by the Federal Circuit. Rather, SynKloud explains that its
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`construction is consistent with the plain and ordinary meaning as understood by a
`
`POSITA. As explained by Mr. Jawadi, a POSITA would have understood that
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`predefining capacity is different than allocating storage:
`
`a POSITA would have understood the predefining capacity to mean defining
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`(i.e., deciding or setting in advance) the amount of storage before the storage
`
`is allocated or assigned to the user (EX2014, § 102);
`
`a POSITA would not have conflated predefining capacity (predefining an
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`amount of storage before the storage is allocated (reserved or assigned) and
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`allocating (reserving or assigning) storage (which happens later). (id. at
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`§103).
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`Indeed, the prefix “pre” in “predefined” means “before.” Ibid.1 Moreover, the claims
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`explicitly recite that “a storage space of a predefined capacity,” is “assigned exclusively
`
`
`1 Petitioners’ statements that SynKloud did not provide a “sufficient basis” for its
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`proposed construction and did not cite to supporting evidence (Reply, 6) are
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`demonstrably false. SynKloud explained—with support from the claim language, the
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`Specification, and expert testimony as to how a POSITA would have understood the
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`claims—that the prefix “pre” in the claim term “predefined” means that the storage is set
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`in advance. PO Response, 12-13.
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`
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`3
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`
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`to the user … by a storage server,” not by the user. EX1001, 5:65-66).
`
`The Specification of the ’526 patent confirms the plain and ordinary meaning that
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`an amount of storage space is defined in advance to a user of a wireless device:
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`Each server unit (e.g., the server 3 of the FIG. 2) partitions its storage system
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`into volume and each of the volumes will have multiple GB in size.
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`Therefore, each user of the wireless devices can be exclusively assigned for
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`access to a specific storage volume on a server unit.
`
`Id. at 4:12-16.
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`Petitioners’ expert did not respond to Mr. Jawadi’s explanation of how a POSITA
`
`would have understood this claim limitation—even though he had the opportunity to do
`
`so in the declaration that was filed with its Reply.
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`SynKloud’s construction should be adopted by the Board. Petitioners do not
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`propose a different construction for this limitation. See Reply, 5-7.
`
`B.
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`download a file from a remote server across a network into the assigned
`storage space through utilizing download information for the file stored
`in said cache storage (independent claims 1 and 11).
`
`As explained by PO, the proper construction of the claim limitation “download a
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`file from a remote server across a network into the assigned storage space through
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`utilizing download information for the file stored in said cache storage” requires
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`“information needed to download a file from a remote server to be (i) stored in a cache
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`storage of a wireless device and (ii) utilized to download the file across a network into an
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`assigned storage space for the user of the wireless device.” PO Response, 10-11
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`
`
`4
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`
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`Petitioners’ quibbling with SynKloud’s use of the term “needed” in its proposed
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`claim construction (Reply, 4-5) is meant to detract from the important point that the
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`claimed “download information” is required to download a file from a remote server into
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`the assigned storage space. Indeed, the “download information” is required or needed
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`because it identifies the file that is to be downloaded from the remote server to the
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`assigned storage space. In other words, the file would not be able to be addressed or
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`downloaded without the “downloaded information.” The Specification explicitly states
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`that the download information in the wireless device’s cache is, in fact, needed and used
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`to download the file:
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`The other software modules (9) of the wireless device (1) send the obtained
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`downloading information to other service modules (7) of the storage server
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`…
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`the other service module (7) of the storage server (3) sends a web download
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`request to the web-site (15) … based on download information obtained. and
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`receives the downloading data streams from the web server of the web-site
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`(15).
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`EX1001, 5:18-26.2
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`Both the claim language itself and the Specification support PO’s proposed
`
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`2 Petitioners’ argument that SynKloud did not “explain why its interpretation should be
`
`used instead of the Board’s” (Reply, 5) is demonstrably false because SynKloud, in fact,
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`provided a detailed explanation with support from the Specification and claim language
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`as to why its claim interpretation is correct. PO Response, 10-11.
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`
`
`5
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`
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`construction.
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`III. None Of The Claims Would Have Been Obvious Over The Combination Of
`McCown and Dutta Under The Proper Claim Construction.
`
`A. The Combination of McCown/Dutta Would Not Have Taught “utilizing
`download information for the file stored in said cache storage.”
`
`Petitioners fail to show that the combination of McCown/Dutta would have taught
`
`the claim limitation quoted above or that a POSITA would have been motivated to
`
`include this limitation in the combination.
`
`i.
`
`The Claim Limitation of “utilizing download information for the file
`stored in said cache storage” Is Wholly Absent From McCown/Dutta
`
`The section of Petitioners’ brief commencing with the heading “McCown/Dutta
`
`Stores Download Information In The Cache” (Reply, 9), in fact, fails to identify where
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`McCown or Dutta discloses storing download information in a cache. The heading is a
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`canard. It does not reflect the content of Petitioners’ argument in the body of the section.
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`Indeed, Petitioners fail to identify the portions of either McCown or Dutta that disclose
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`this claim limitation. It is little wonder why. McCown does not even mention a cache.
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`EX2014, ¶ 37. Indeed, Petitioners admitted that “McCown does not explicitly disclose
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`that the URLs identifying files available for download from the remote site (‘download
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`information’) are ‘stored in said cache storage’[.]” Petition, 51. Petitioners did not point
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`to the teachings of Dutta that provide the disclosure that is missing from McCown. See
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`Petition, 51-52; Reply, 8-10. Indeed, as explained by Mr. Jawadi, Dutta does not explain
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`“how the data in its cache is used, let alone that the specific way of using information
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`
`
`6
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`
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`stored in the cache on the wireless device disclosed in the ’526 Patent.” EX2001, ¶ 39.
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`Thus, Petitioners’ arguments miss the mark entirely and are not commensurate
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`with the scope of the claims of the ’526 patent. All the claims require much more than a
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`mere cache; they require “utilizing download information for the file stored in said cache
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`storage in response to the user device performed the operation for downloading the file
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`from the remote server into the assigned storage space.” EX1001, 6:7-15. The
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`Specification describes this claimed method using the system depicted in FIG. 3.
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`EX1001, 5:7-16.
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`None of the portions of McCown and Dutta cited by Petitioners in their Petition
`
`and Reply would have taught the claim limitation of utilizing download information in
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`the cache of a wireless device to download a file to an assigned storage space. There is
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`not a whisper of a suggestion in McCown or Dutta that download information would
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`have been retrieved from a cache storage of a wireless device and utilized to download a
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`file from a remote server to assigned storage on a storage server, as claimed by the ’526
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`patent. The mere mention of a cache in Dutta would not have taught that download
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`information from the web cache is utilized to download a file from a remote server to a
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`storage server. Indeed, Petitioners stated that “source code … would be required to
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`determine what gets stored in cache and what does not.” Reply, 23. But Petitioners did
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`not present any source code for the web browsers on which they rely. Reply, 7-11.
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`
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`
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`7
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`
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`ii.
`
`Petitioners Fail To Show That A POSITA Would Have Been
`Motivated To Modify McCown/Dutta To Include the Absent Claim
`Limitations.
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`When claim limitations are wholly absent from the prior art, contemporaneous
`
`documentary evidence is required to support an obviousness theory that relies on
`
`modification of the prior art to supply the missing limitations. K/S HIMPP, 751 F.3d at
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`1366. Petitioners and their expert did not provide the required documentary evidence. See
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`Reply, 8-11.
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`Petitioners’ listing of arguments of why it would have been obvious to use a cache
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`(Reply, 9) is not commensurate with the scope of the claims of the ’526 patent, which
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`require storage of download information locally in the cache of a user’s wireless device
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`for use remotely to download a file from a remote server to assigned storage. EX1001,
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`6:5-15. Indeed, SynKloud and Mr. Jawadi, explained in detail why every motivation
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`argument set forth by Petitioners would not have, in fact, motivated a POSITA to modify
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`the teachings of McCown and Dutta to store download information identifying a file at a
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`remote server in a cache of a user’s wireless device:
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`- Petitioners’ “readily accessible” theory would not have motivated a POSITA to
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`modify McCown to include a cache and to store download information in the
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`cache (PO Response, 23-24);
`
`- Petitioners’ theory of why a POSITA would have been motivated to modify
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`McCown to include a cache and to store download information in the cache is
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`
`
`8
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`
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`inconsistent with Petitioners’ own description of McCown (id. at 24-25);
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`- A POSITA would not have been motivated to modify McCown to include a
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`cache and to store download information in the cache because McCown stores
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`the files at the storage site (id. at 25-26);
`
`- Petitioners’ argument about “re-opening the web page” would not have
`
`motivated a POSITA to modify McCown to include a cache and to store
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`download information in the cache (id. at 27-30);
`
`- McCown Contradicts Petitioners’ Theory for the Motivation for Storing the
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`Download Information in Cache (PO Response (EX2014, § V.B.viii);
`
`- McCown Stores the Files in the Storage Site, Further Negating the Need to
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`Store the Download Information in Cache (id. at § V.B.ix);
`
`- Dutta Does Not Disclose a Reason to Store Download Information in Cache (id.
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`at § V.B.x).
`
`Petitioners’ expert again failed to respond to Mr. Jawadi’s extensive testimony as
`
`to why a POSITA would not have been motivated to modify the McCown/Dutta
`
`combination to achieve the claimed invention.
`
`iii.
`
`SynKloud’s Patentability Arguments Are Unrelated To The Printed
`Matter Doctrine.
`
`Petitioners also argue with reliance on Proxair Distrib., Inc. v. Mallinckrodt Hosp.
`
`Prods. IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018) for the proposition that “[c]laim
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`limitations directed to printed matter are not entitled to patentable weight.” Reply, 11,
`
`
`
`9
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`
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`citing Proxair Distrib., Inc., 944 F.3d at 1031. But Proxair Distrib. Inc. is inapposite.
`
`There, the Federal Circuit held that a claim limitation is directed to unpatentable printed
`
`matter when “it merely requires a medical provider to think about the information
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`claimed in the providing information limitation.” Id. at 1033. Here, the claims of the ’526
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`patent are directed to program code that causes a wireless device to utilize download
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`information locally stored in its cache to address and download a file remotely stored on
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`a remote server to an assigned storage space:
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`couple with the storage server across the wireless link to carry out a
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`requested operation for remote access to the assigned storage space in
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`response to the user from the wireless device performed the operation,
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`wherein the operation for the remote access to the assigned storage
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`space comprises storing a data object therein or retrieving a data object
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`therefrom, the storing of a data object including to download a file from a
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`remote server across a network into the assigned storage space through
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`utilizing download information for the file stored in said cache storage in
`
`response to the user from the wireless device performed the operation for
`
`downloading the file from the remote server into the assigned storage space.
`
`EX1001, 6:1-15. Clearly, the claimed download information in the cache of the wireless
`
`device is not printed matter and even if it were, it would still be given patentable weight
`
`because it is utilized to perform a function on the wireless device. See In re Lowry, 32
`
`
`
`10
`
`
`
`F.3d 1579, 1583-84 (Fed. Cir. 1994) (citing In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
`
`1983)).
`
`Unified does not nearly show by a preponderance of the evidence that this
`
`limitation would have been obvious.
`
`B. The Combination of McCown/Dutta Would Not Have Taught “a storage
`space of a predefined capacity assigned exclusively to a user of the wireless
`device by a storage server.”
`
`As explained supra § II.A, the proper construction of this claim limitation requires
`
`“deciding or setting in advance by a storage server an amount of storage server an
`
`amount of storage space exclusively to a user of a wireless device.” PO Response, 12.
`
`Petitioners state that “Patent Owner’s [non-obviousness] argument is thus based on a
`
`legally erroneous understanding of claim scope” (Reply, 19) but does not propose a
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`construction to use instead. See Reply, 5-7. Indeed, Petitioners claim construction
`
`analysis is flawed because it neglects to consider that the prefix “pre” in the claim term
`
`“predefined” means that the capacity must be assigned in advance. Supra, § II.A.
`
`The sole sentence in Dutta relied upon by Petitioners (Reply, 14, citing EX1006, ¶
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`[0038]) for its obviousness argument does not relate to the “predefined capacity” claim
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`limitation. The sentence states only that “the user is allocated a certain amount of online
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`storage space 336 in which the user may store various types of data.” Ibid.
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`There is a significant difference between allocating storage space as taught by
`
`Dutta and assigning a “predefined capacity” of storage “exclusively to a user,” as
`
`
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`11
`
`
`
`required by the claims of the ’526 patent. As explained by Mr. Jawadi, “[a] POSITA
`
`would have understood the predefining capacity to mean defining (i.e., deciding or
`
`setting in advance) the amount of storage before the storage is allocated or assigned to
`
`the user.” EX2014, ¶ 102. “A POSITA would not have conflated predefining capacity
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`(predefining an amount of storage before the storage is allocated (reserved or assigned)
`
`and allocating (reserving or assigning) storage (which happens later).” Id., ¶ 187.
`
`Petitioners argument that “neither Patent Owner nor its expert address the detailed
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`reasoning in the Petition showing why this claim element would have been obvious”
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`(Reply, 18) is demonstrably false. Mr. Jawadi explained in detail that (i) “McCown’s
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`Provisioning and Authentication Do Not Disclose Predefined Capacity Assigned
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`Exclusively to a user of the Wireless Device by a storage Server (EX2014, § V.B.b.ii),
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`(ii) McCown with Memory partitioning Does Not Disclose Predefined Capacity Assigned
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`Exclusively to a User of the Wireless Device by a Storage Server” (id., § V.B.b.iii), (iii)
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`“Dutta Does Not Disclose Predefined Capacity Assigned Exclusively to a User of the
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`Wireless Device by a Storage Server” (id., § V.B.b.iv), and (iv) “Predefined Capacity
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`Assigned Exclusively to a user of the Wireless Device by a Storage Server” (id., §
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`V.B.b.v). Neither Petitioners nor their expert provided any response to Mr. Jawadi’s
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`detailed explanation for why the “predefined capacity” claim limitation is wholly absent
`
`from the McCown/Dutta combination and would not have been obvious. See Reply, 18-
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`19.
`
`
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`12
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`
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`Accordingly, the McCown/Dutta combination would not have taught that (i)
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`capacity is predefined exclusively for each user (ii) by the storage server, (iii) before any
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`interaction between the user and storage server. And Petitioners did not provide any
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`documentary evidence showing that the limitations that are wholly absent from the prior
`
`art would have been obvious. See Reply, 18-19.
`
`C. A POSITA Would Not and Could Not Have Combined McCown and Dutta
`and Reasonably Expect Success.
`
`Petitioners state—without any support whatsoever—that its obviousness “analysis
`
`is supported by numerous citations to evidence in the prior art.” Reply, 11. But many
`
`limitations are wholly absent from the prior art. Supra, §§ III.A, III.B. And the Petition
`
`fails to cite to any documentary evidence showing that the missing limitations would
`
`have been obvious. See Petition, 28-57. Petitioners fail to identify a single document
`
`suggesting that it would have been obvious to modify the McCown/Dutta combination to
`
`store download information locally in the cache of a wireless device and to use it to
`
`address and download a file from a remote server to assigned storage or to include a
`
`“storage space of a predefined capacity assigned exclusively to a user of the wireless
`
`device by a storage server,” as recited in the independent claims of the ’526 patent. See
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`Reply, 11-18.
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`Petitioners’ argument that “Patent Owner does not contest the level of ordinary
`
`skill set forth by the Petitioner” misses the mark because nothing in Petitioners’ POSITA
`
`definition indicates that such a person would have found it obvious to modify the
`
`
`
`13
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`
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`McCown/Dutta combination to include the missing claim limitations.
`
`i.
`
`Petitioners’ Expert Fails To Respond To Mr. Jawadi’s Explanation
`Of Why A POSITA Would Not Have Been Motivated To Modify The
`McCowen/Dutta Combination To Utilize Download Information
`Stored Locally In The Cache of A Wireless Device To Download A
`File Stored Remotely On A Remote Server.
`
`SynKloud and Mr. Jawadi, explained in detail why each and every motivation
`
`argument set forth by Petitioners would not have, in fact, motivated a POSITA to modify
`
`the teachings of McCown and Dutta to store download information identifying a file at a
`
`remote server in a cache of a user’s wireless device:
`
`- Petitioners’ “readily accessible” theory would not have motivated a POSITA to
`
`modify McCown to include a cache and to store download information in the
`
`cache (PO Response, 23-24);
`
`- Petitioners’ theory of why a POSITA would have been motivated to modify
`
`McCown to include a cache and to store download information in the cache is
`
`inconsistent with Petitioners’ own description of McCown (id. at 24-25);
`
`- A POSITA would not have been motivated to modify McCown to include a
`
`cache and to store download information in the cache because McCown stores
`
`the files at the storage site (id. at 25-26);
`
`- Petitioners’ argument about “re-opening the web page” would not have
`
`motivated a POSITA to modify McCown to include a cache and to store
`
`download information in the cache (id. at 27-30);
`
`
`
`14
`
`
`
`- McCown Contradicts Petitioners’ Theory for the Motivation for Storing the
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`Download Information in Cache (PO Response (EX2014, § V.B.viii);
`
`- McCown Stores the Files in the Storage Site, Further Negating the Need to
`
`Store the Download Information in Cache (id. at § V.B.ix);
`
`- Dutta Does Not Disclose a Reason to Store Download Information in Cache (id.
`
`at § V.B.x).
`
`Petitioners’ expert again failed to respond to Mr. Jawadi’s extensive testimony as
`
`to why a POSITA would not have been motivated to modify the McCown/Dutta
`
`combination to achieve the claimed invention. Petitioners instead respond with mere
`
`conclusory attorney argument, which should be given no weight. In re Geisler, 116 F.3d
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`1465, 1471 (Fed. Cir. 1997).
`
`Petitioners assert—without any expert support—that storing McCown’s web page
`
`“in such a cache would have been the most readily accessible place for its storage.”
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`Reply, 13. But Petitioners’ arguments are inconsistent with the disclosure of McCown
`
`itself. As explained by Mr. Jawadi, McCown’s URLs “are used only once by the user,”
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`thereby negating the need to store the URLs in cache. EX2014, at ¶ 68. “McCown
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`describes that the user selects the desired URL or URLs and sends the selected URL or
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`URLs to the storage site from the web page that is already displayed. In particular,
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`McCown describes that the user selects all the desired URL or URLs, one at a time, from
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`the list of files already displayed in the web page, and sends the desired URL or URLs in
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`
`
`15
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`
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`a data request to the storage site.” EX2014, ¶ 62. McCown states that “[e]ach data request
`
`contains the URL's of the selected files 112”. EX1005, 11. Because the data request that
`
`is sent by the user of the wireless device to the storage site contains all the URLs selected
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`by the user, there is “no reason for the user to need the URLs again.” EX2014. at ¶ 68.
`
`As explained by Mr. Jawadi, “[o]nce the user has selected these files and sent them to the
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`storage site, there is no need or reason to retrieve the URLs (download information)
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`again.” Id. at ¶ 65. Petitioners’ “readily accessible” argument is unsupported and has no
`
`merit.
`
`Petitioners next states that “it is simply common sense that such multiple accesses
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`could happen in a system such as McCown’s.” Reply, 14. But the Federal Circuit has
`
`made it clear that when a claim limitation is wholly absent from the teachings of the prior
`
`art, documentary evidence is required to establish obviousness. K/S HIMPP, 751 F.3d at
`
`1366; see also NuVasive, 842 F.3d at 1383 (“common sense” is not reasoned analysis); In
`
`re Zurko, 258 F.3d 1379, 1385-1386 (Fed. Cir. 2001) (general conclusions about “basic
`
`knowledge” or “common sense” cannot replace documentary evidence for core factual
`
`findings in a patentability determination.).
`
`Petitioners fail to provide the required documentary evidence and provide mere
`
`attorney argument. See Reply, 13-15. Moreover, under Petitioners’ own description of
`
`McCown, “there is no need or reason to retrieve the URLs again” because the user
`
`already sent the URLs of the desired files to the storage site. EX2014 ¶ 65. Also, the “list
`
`
`
`16
`
`
`
`of URLs [in McCown] is generated by the application from the web page and not from
`
`the cache of the wireless device.” EX2014, ¶ 64. “McCown provides no reason for the
`
`user to need the URLs again” after they are selected by the user. Id. at ¶ 68.
`
`Accordingly, Petitioners’ argument that a user would need to revisit the web page
`
`for file selection does not support its assertion that a POSITA would have been motivated
`
`to modify McCown in the way that they suggest. Arista Networks, Inc. v. Cisco Systems,
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`Inc., 2016 WL 1083023*5 (PTAB 2015)(conclusory assertions, without evidence, are
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`inadequate to support a Petition for IPR.).
`
`Petitioners next make a series of allegations that “Patent Owner has not sought to
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`contest any of these facts,” (Reply, 17), “does not contest the additional reasons set forth
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`in the Petition showing that caching McCown’s web page of URLs would have been
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`obvious,” (ibid.) and “therefore concedes those facts.” Id. at 18. Petitioners allegations
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`are demonstrably false. PO and Mr. Jawadi provided dozens of pages of analysis
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`explaining why a POSITA would not have been motivated to modify the McCown/Dutta
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`combination to utilize download information stored locally in the cache of a wireless
`
`device to identify a file stored remotely on a remote server and download it to an
`
`assigned storage space. PO Response, 17-30, EX2014, Jawadi Decl., 13-30.
`
`Petitioners’ arguments are unavailing for several reasons. First, as explained by
`
`Mr. Jawadi, “the user sends all the desired URLs to the storage site without retrieving
`
`another web page and without retrieving the initial page again.” EX2014, ¶ 186. In
`
`
`
`17
`
`
`
`McCown, “the user makes all the selections without leaving the page.” EX2014, ¶ 86.
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`Indeed, as explained by Mr. Jawadi, “McCown provides a specific reason to not need the
`
`URLs again, namely … that the files pointed to by the URLs will be stored in the storage
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`site.” Id. at ¶ 80.
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`Second, upon receipt of the URLs from the user site, the storage site in McCown
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`immediately uses them—while the user is still on the web page containing the URLs— to
`
`download the corresponding files from a remote web site to the storage site, where the
`
`files are saved. EX 1005, 11:12-23. Thus, as explained by Mr. Jawadi, “[o]nce the files
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`are downloaded to the storage site (which is immediately upon receipt of the URLs),
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`there is no reason for a user to need the URLs again.” EX2014, ¶ 72.
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`Third, there is not a whisper of a suggestion in McCown that a “user re-opens the
`
`webpage listing the URLs for purposes of making another selection” (id. at ¶ 88) and
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`Petitioners provide no documentary evidence to support its argument that a user would do
`
`so. See Reply, 15-18. Fourth, there is also no suggestion in McCown of retrieving URLs
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`a second time “whether from cache or otherwise.” Id. at ¶ 89 (emphasis in original).
`
`Rather, “McCown explicitly teaches the opposite.” Id. McCown discloses that the URLs
`
`are immediately transmitted to a storage site while the user is on the selection page and
`
`that the files are immediately downloaded from the web site to the storage site, where
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`they are saved. EX 1005, 11:12-23.
`
`
`
`
`
`18
`
`
`
`ii.
`
`Petitioners’ Expert Fails To Respond To Mr. Jawadi’s Explanation
`Of Why A POSITA Would Not Have Been Motivated To Modify The
`McCowen/Dutta Combination To Include “a storage space of a
`predefined capacity assigned exclusively to the user of a wireless
`device by a storage server.”
`
`As explained by Mr. Jawadi, the additional exhibits relied upon by Petitioners in
`
`their Petition would not have taught the claim limitation quoted above that is wholly
`
`absent from the McCown/Dutta combination. PO Response, 34-39, EX2014, 30-42. In
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`response, Petitioners argue—with no support from their expert or any other evidence—
`
`that “the prior art techniques for allocating primary storage as disclosed in EX1017 and
`
`EX1018 are clearly pertinent to, and relate to, a patent directed to downloading files into
`
`predefined and assigned portions of primary storage in a remote server.” Reply, 20. It is
`
`little wonder why Petitioners have no support from their expert for this statement. It is
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`plainly wrong.
`
`As explained by Mr. Jawadi, “A POSITA would not conflate such storage (often
`
`referred to as secondary storage or external storage) [as claimed in the ’526 patent] and
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`system memory (often referred to as primary or internal memory) [Exhibits 1017 and
`
`1018].” EX2014, ¶105. “[T]he prior art reference EX1017 cited by Petitioners describes
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`partitioning of primary memory (e.g., internal memory, RAM, or ROM), but not
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`partitioning of disk drives or other storage devices and subsystems common in storage
`
`servers.” Ibid. EX1027 discloses allocating memory and partitioning shared memory
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